Delhi High Court: In a case wherein, Paul Components Pvt. Ltd, the plaintiff had filed a suit against Hi Tech Pvt. Ltd., the defendant to seek a permanent injunction and thereby restrain defendant from using marks and logo, C. Hari Shankar J.*, opined that pending disposal of the suit, the plaintiff was entitled to an interlocutory injunction and restrained the defendant “HTA” or “ARS-HTA” marks and logos or using a packing which was similar to the mark , which stood registered in favour of the plaintiff.
The plaintiff was the registered proprietor of the trademarks HTA, , for oil seals and rubber parts for use in vehicles. The defendant used the marks “HTA” and “ARS-HTA” also in respect of oil seals for vehicles and had no trademark registration.
Subsequently, the plaintiff alleged that the marks HTA and ARS-HTA infringed the plaintiff’s registered trademarks. The plaintiff also alleged that its registered device mark also stood infringed by the trade dress adopted by the defendant for packing its products and the design of the package used by the defendant was confusing or deceptively similar to the plaintiff’s design package.
A comparison of the 2 packs:
Analysis, Law, and Decision
The Court opined that ordinarily, where trade mark infringement within Section 29 of the Trade Mark Act, 1999 (‘the Act’) had taken place, injunction must follow. However, under Section 34 of the Act, an unregistered user of a trade mark which stood registered in favour of another, could escape an injunction, if the use of the impugned mark, pre-dates the use as well as the registration of the mark of which infringement was alleged.
The Court noted that the defendant claimed user of the impugned mark since 1985. On the other hand, the plaintiff had placed large amount of material to evidence pre-1985 user. Therefore, the Court opined that the plaintiff had made out a prima facie case of priority of user of the asserted “HTA” mark.
On considering the issue, whether the impugned marks of the defendant were deceptively similar to the registered trademarks of the plaintiff, the Court opined that the use of the “HTA” mark by the defendant directly infringed the “HTA” mark registered in the plaintiff’s favour, as per Section 29-(2)(c) read with Section 29-(3) of the Act.
The Court further opined that as “HTA” constituted a prominent part of the “ARS-HTA” mark as well as the logo, the use of the said marks would also infringe the HTA mark of the plaintiff, as per the Section 29-(2)(b) of the Act. Thus, the fact that the rival marks were used for identical goods, and cater to the same customer segment, also contributed to the likelihood of confusion or deception.
The Court relied on Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 and opined that the plaintiff was entitled to interlocutory injunction, pending the disposal of the suit.
The Court further opined that pending disposal of the suit, the defendant was restrained from using, in any manner and for any purpose, either physically or virtually, the marks “HTA” or “ARS-HTA”, whether as word marks or logos, or using a packing which was similar to the mark , which stood registered in favour of the plaintiff.
The Court stated that the defendant should also remove from all physical and virtual sites, any reference to the marks HTA or ARS-HTA, or to the trade dress or logo. The Court while allowing the application also stated that the Court had not passed any injunctive orders with respect to goods which were already in the market, bearing the infringed marks, as they were outside the control of the defendant.
[Paul Components Pvt. Ltd. v. Hi Tech Pvt. Ltd., 2023 SCC OnLine Del 4775, decided on 09-08-2023]
*Judgment by- Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiff: C.M. Lall, P.S. Bindra, Senior Advocates; Jayant Kumar and S. Chaddha, Advocates;
For the Defendant: Dayan Krishnan, Senior Advocate, Ravi Raghunath, Aakashi Lodha, Sreedhar Kale and Sanjeev Seshadri, Advocates.